Practices

• Biotechnology
• Chemical & Materials Technologies
• Cleantech
• Electrical & Computer Technologies
• Interference
• Internet & Domain Names
• Licensing & Transactions
• Litigation
• Mechanical Technologies
• Nanotechnology
• Pharmaceutical
• Startups
• Trademark & Copyright

Services

• Alternative Dispute Resolution
• Copyright
• Due Diligence
• International
• IP Strategy
• Litigation
• Opinion
• Patent
• Trademark

Licensing & Transactions

Group at a Glance

• 12 members

• Examples of agreements we have drafted / negotiated include: IP licenses, assignments, and security agreements; collaborative and tech transfer agreements; trade secret and know-how transfers; IP-related employment agreements, agreements relating to product development, including software and web services; and distributorship / reseller agreements. (See below for more detailed list.)

What Matters to Our Clients

Experience on Both Sides of Table

Our Licensing and Transactions attorneys are accomplished in helping clients formulate and execute many kinds of technology-based transactions. Having been on both sides of the table, we bring to bear experience in business relationships, practices, and trends in our clients’ market sectors, and an up-to-date knowledge of the relevant law.

We have negotiated numerous kinds of deals and have drafted the supporting documents and provided after-deal servicing and counsel. An IP transaction has a life that does not end when the ink is dry, and we are there to nurture it when needed.

We also recognize that getting a deal done means being effective with the people on the other side of the table. We understand the strengths and weaknesses of the parties’ intellectual property and how that should enter into the picture, and then we provide our clients with terms that will result in a workable relationship.

Technical Knowledge Base

Because we are focused solely on IP, our deep technical expertise allows us to analyze the market forces at play and competitors’ technologies in ways most other firms simply cannot do. We are able to project the ways a technology, industry and client’s business are likely to develop. Often, this enables us to suggest ways to anticipate potential opportunities or problems. Sometimes, we are able to suggest other profitable applications for a client’s technology as well as warn of potential pitfalls that may lie ahead.

Support for Business Goals

Transactions do not take place in a vacuum. We place a premium on understanding our clients’ business objectives right from the start so we can effectively integrate their IP strategies—including transactions—into a plan for meeting those goals. Business context is foundational to effective transactions.

We are known for our ability to identify, evaluate, and structure the right deal in the first place as well as for our skill in preparing and negotiating successful agreements. Because we know the difference between a good deal and a good agreement, our goal is to give our clients both at the end of the day. The result is an agreement that makes sense and meets goals.

Familiar with the driving issues in our clients’ industries, business-focussed, and able to spot the nuances of both science and law, we are known for our ability to extract high value for our clients. We don’t simply copy the technical terms into boilerplate documents; we shape each situation to match a client’s industry and long range business needs.

Experience in All Forms of Agreements

Our group has successfully structured and negotiated a wide range of IP-related deals, small and large. We treat each transaction with the appropriate level of attention. A small deal is not blown into an oversized project, and we strive to keep the big, complex deal manageable. Examples of the types of agreements we provide include:

• Patent / technology, copyright and trademark licenses, sales and acquisitions
• Joint venture and other types of collaboration agreements
• Joint development agreements
• Know-how and trade secret agreements
• Confidentiality / non-disclosure agreements
• Consulting and employment agreements
• Software licenses (including open source licenses), web-related agreements, and escrow agreements
• Software / product development agreements
• Distributorship and reseller agreements (domestic and international)
• IP holding company agreements
• Brokerage agreements
• University licenses (acting for the university or the licensee)
• Material transfer agreements
• CREATE Act agreements
• Manufacturing and supply agreements for proprietary products

Our Services

Services provided by our Licensing & Transactions attorneys include:

• Strategic counseling on scope and nature of proposed business arrangements, including:
  • Timing of and financial / non-financial terms in deals
  • Adoption of exclusive vs. non-exclusive agreements
  • Brand protection strategies
  • Advice regarding issues specific to the technologies and / or players involved 
  • Advice on implications of transactions on related company activities
• Drafting and negotiating term sheets, licensing and other agreements
• Evaluation of antitrust concerns and alternative deal structures
• Counseling with respect to participation in standard setting organizations and other consortia
• Crafting dispute resolution provisions and agreements
• Counseling on potential insolvency complications in agreements
• Counseling on acquisition and sale of assets, including purchase and sale out of bankruptcy
• Providing connections with other service providers, technology buyers and brokers, financing sources, etc.
• Preparing informational packages for use in presenting intellectual property for sale or license